UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

) CENTOCOR ORTHO BIOTECH, INC., ) ) Plaintiff, ) ) Civil Action No. 09-1653 (EGS) v. ) ) ABBOTT GMBH & CO., KG, ) ) Defendant. ) )

MEMORANDUM OPINION

On August 28, 2009, plaintiff Centocor Ortho Biotech, Inc.

(“Centocor”), filed two related patent actions in this Court.

Civil action number 09-1653 seeks review of the United States

Patent and Trademark Office’s decision regarding Patent Number

6,914,128 (the “’128 patent”) pursuant to

(hereinafter, “Civil Action 09-1653” or “Section 146 Action”).

Civil action number 09-1654 seeks a declaratory judgment of non-

infringement and invalidity of the ’128 patent and Patent Number

7,504,485 (the “’485 patent”) (hereinafter, “Civil Action 09-

1654” or “Declaratory Judgment Action”). Pending before the

Court is a motion to transfer venue filed by Defendant Abbot GmbH

& Co., KG (“Abbott GmbH”). Upon consideration of the motion, the

response and reply thereto, the applicable law, and for the

reasons stated below, the Court GRANTS defendant’s motion to

transfer venue. Accordingly, Civil Action 09-1653 and Civil Action 09-1654, shall be transferred to the United States

District Court for the District of Massachusetts, Central

Division (the “District of Massachusetts”) where Abbott GmbH’s

first-filed action is pending.

I. BACKGROUND

On December 12, 2007, the United States Patent and Trademark

Office Board of Patent Appeals and Interferences (“USPTO Board”)

declared an interference between Abbott GmbH’s ’128 patent and

Centocor’s 10/912,994 patent application (the “’994

application”), both of which cover antibodies that bind to the

interleukin-12 (“IL-12”). See Section 146 Action Complaint (“146

Compl.”) ¶ 7; Declaratory Judgment Action Complaint (“DJ Compl.”)

¶ 11. Antibodies that bind to IL-12 are used to treat, among

other things, psoriasis. DJ Compl. ¶ 12. Interference

proceedings were instituted by the USPTO Board to determine which

group of inventors was the first to invent the overlapping

subject matter, as well as the obviousness of the ’128 patent.

Pl.’s Opp’n Br. at 2-3. On August 6, 2009, the USPTO Board ruled

in favor of Abbott GmbH on these issues.

Four days after receiving this ruling, on August 10, 2009,

defendant Abbott GmbH and Abbott Bioresearch Center (“ABC”), a

Massachusetts-based sister company of Abbott GmbH, filed suit

against Centocor in the District of Massachusetts (hereinafter,

the “Massachusetts Litigation”). See Abbott GmbH & Co., KG v.

2 Centocor Ortho Biotech, Inc., No. 09-cv-11340-FDS (D. Mass.)

(Saylor, J.). In the Massachusetts Litigation, Abbott GmbH and

ABC allege that Centocor infringed the ’128 patent and ’428

patent by making, using, selling, or offering for sale STELARA.

Pl.’s Opp’n Br. at 3. STELARA is an antibody product that was

developed by Centocor for the treatment of psoriasis. Pl.’s

Opp’n Br. at 3. STELARA is now approved for sale nationwide,

including in the District of Columbia and Massachusetts. Pl.’s

Opp’n Br. at 10.

On August 28, 2009, after being served with the complaint in

the Massachusetts Litigation, Centocor instituted the Section 146

Action and Declaratory Judgment Action in this Court

(collectively, the “D.C. Litigation”). Pl.’s Opp’n Br. at 3-4.

The Section 146 Action challenges the USPTO Board’s rulings, and

the Declaratory Judgment Action requests declarations of non-

infringement and invalidity of the ’128 and ’485 patents.1

Concluding that its Declaratory Judgment Action would

dispose of all issues pleaded in the Massachusetts Litigation,

1 ABC is not a party to the D.C. Litigation. Centocor explains that it did not name ABC in its Section 146 Action because ABC was not a party to the interference proceedings; similarly, it did not name ABC in its Declaratory Judgment Action because ABC was not an assignee of the ’128 patent or the ’485 patent. Pl.’s Opp’n Br. at 4. Although not relevant to this action, Centocor argues that ABC lacks standing to participate in the Massachusetts Litigation and intends to move to have ABC dismissed pursuant to Federal Rule of Civil Procedure 12(c). See Pl.’s Opp’n Br. at 8 n.1.

3 see Pl.’s Opp’n Br. at 4, Centocor filed a motion to transfer

venue in the District of Massachusetts, seeking transfer of the

Massachusetts Litigation to this Court. See Abbott GmbH & Co.,

KG v. Centocor Ortho Biotech Inc., No. 09-cv-11340-FDS, Docket

No. 11 (D. Mass.) (requesting that the action be transferred to

the District of Columbia “for reasons of efficiency and judicial

economy”);2 see also Pl.’s Opp’n Br. at 1 (“Centocor recognizes

that significant efficiency and economy would flow from having

these actions litigated in the same forum as Abbott GmbH’s claims

in the Massachusetts Litigation, but in view of all the factors

of justice and convenience, this district, not Massachusetts,

should be the forum where all three actions are heard.”). Abbott

GmbH opposes transfer of the Massachusetts Litigation to this

forum. Indeed, on the same day that it filed its opposition

brief in the Massachusetts Litigation, Abbott GmbH filed a motion

in this Court seeking transfer of the D.C. Litigation to the

District of Massachusetts based on the “first-filed rule” and

(a). See infra Part II.

This case, therefore, presents a unique circumstance in

which all parties agree that the pending litigation should be

resolved by one court – either this Court or the District of

Massachusetts. For the reasons discussed below, the Court

2 This motion has not yet been resolved by the District of Massachusetts.

4 determines that it is appropriate to transfer the D.C. Litigation

to the District of Massachusetts.

II. STANDARD OF REVIEW

“The first-to-file rule dictates that when two actions

involving the same subject matter are pending, the first-filed

action should proceed to the exclusion of the later-filed

action.” Intervet, Inc. v. Merial Ltd.,

(D.D.C. 2008); see also Washington Metro. Area Transit Auth. v.

Ragarose,

(D.C. Cir. 1980) (“For more than

three decades the rule in this circuit has been that [w]here two

cases between the same parties on the same cause of action are

commenced in two different Federal courts, the one which is

commenced first is to be allowed to proceed to its conclusion

first . . . .” (internal quotation marks omitted)). The forum of

the first-filed case is generally favored, “unless considerations

of judicial and litigant economy, and the just and effective

disposition of disputes, requires otherwise.” Elecs. for

Imaging, Inc. v. Coyle,

(Fed. Cir. 2005)

(internal quotation marks omitted); see generally Columbia Plaza

Corp. v. Sec. Nat’l Bank,

(D.C. Cir. 1975)

(recognizing the general rule favoring the earlier-filed action,

but emphasizing that it should not be mechanically applied in

cases where “countervailing equitable considerations” counsel

against it). Relevant equitable considerations include “the

5 convenience and availability of the witnesses, or absence of

jurisdiction over all necessary or desirable parties, or the

possibility of consolidation with related litigation, or

considerations relating to the real party in interest.”

Intervet, Inc. v. Merial, Ltd. (“Intervet II”), No. 08-2162,

(D.D.C. Sept. 15, 2009).

The federal venue transfer statute - § 1404(a) - provides

that “[f]or the convenience of parties and witnesses, in the

interest of justice, a district court may transfer any civil

action to any other district or division where it might have been

brought.”

(a). The district court has

discretion to adjudicate motions to transfer according to an

“‘individualized case-by-case consideration of convenience and

fairness.’” Stewart Org., Inc. v. Ricoh Corp.,

(1988) (quoting Van Dusen v. Barrack,

(1964)).

The moving party - in this case, Abbott GmbH - bears the burden

of establishing that transfer of the action is proper. Devaughn

v. Inphonic, Inc.,

(D.D.C. 2005).

The defendant must make two showings to justify transfer.

First, the defendant must establish that the plaintiff could have

brought suit in the proposed transferee district.

;

Trout Unlimited v. United States Dep’t of Agric.,

(D.D.C. 1996). Second, the defendant must demonstrate

that considerations of convenience and the interests of justice

6 weigh in favor of the transfer. Devaughn,

;

Trout Unlimited,

.

III. ANALYSIS

A. The First-Filed Rule

Because the Massachusetts Litigation was filed on August 10,

2009 – nearly three weeks before Centocor filed the D.C.

Litigation – Abbott GmbH argues that the “first-filed rule”

counsels in favor of transferring the Declaratory Judgment Action

to the District of Massachusetts. The parties agree that the

issues in the Declaratory Judgement Action pending in this Court

are identical to the issues presented in the Massachusetts

Litigation. See Def.’s Br. at 5-6 (explaining that the

compulsory counterclaims that Centocor filed in the Massachusetts

Litigation are identical to the claims presented in the

Declaratory Judgment Action); Pl.’s Opp’n Br. at 4 (acknowledging

that the parties and subject matter of the Declaratory Judgment

Action and the Massachusetts Litigation “overlap entirely”).3

Finding no “countervailing equitable considerations” that counsel 3 With regard to plaintiff’s argument that this Court should disregard the first-filed rule because Abbott GmbH has no connection to Massachusetts, see Pl.’s Opp’n Br. at 9-11, the Court finds this argument both unsupported and unpersuasive substantially for the reasons articulated in defendant’s reply brief. See Def.’s Reply Br. at 4 (“Abbott GmbH filed [suit] in the District of Massachusetts because it is the most convenient forum for its witnesses (both party and third-party witnesses) that are currently identifiable, a significant amount of the documentary evidence is located there, Abbott’s competing product is being developed there, and Centocor’s infringement is taking place there.”).

7 against application of the first-filed rule,4 the Court concludes

that this factor weighs heavily in favor of transfer. Columbia

Plaza Corp.,

; see also, e.g., Biochem Pharma,

Inc. v. Emory Univ.,

(D.D.C. 2001)

(“Transfer under § 1404(a) is appropriate where there is an

ongoing related case in another jurisdiction. Piecemeal

litigation in the complex and technical area of patent and

trademark law is especially undesirable. Rather, all of the

parties’ related patent and trademark infringement claims should

be decided in the same court.” (internal citations and quotation

marks omitted)).

B. Where the Cases Might Have Been Brought

Before the Court transfers an action to another venue

pursuant to § 1404(a), the defendant must show that the plaintiff

could have brought the action in the proposed transferee

district. Devaughn,

(citing Van Dusen,

). In this case, the Court concludes that the D.C.

Litigation could have been brought in the District of

Massachusetts.

4 The Court discusses the relevant equitable considerations in its § 1404(a) analysis, below. Far from counseling against transfer, the balance of the equities favors transfer of the D.C. Litigation to the District of Massachusetts.

8 1. The Section 146 Action

permits any party to an interference

proceeding that is dissatisfied with a decision of the USPTO

Board to “have remedy by civil action.”

. The

statute also provides that “[i]f there be . . . an adverse party

residing in a foreign country, the United States District Court

for the District of Columbia shall have jurisdiction . . . .”

Centocor argues that because Abbott GmbH is a German

corporation “with no apparent significant contacts with any

United States forum,” § 146’s special jurisdictional grant to the

District of Columbia was the only way that it could ensure that

its suit was properly filed. See Pl.’s Opp’n Br. at 1, 6-9

(“Centocor’s choice of forum is legitimate and appropriate

because Centocor could be assured of personal jurisdiction over

Abbott GmbH in only this forum.”).

While it is undoubtedly true that actions involving foreign

defendants may be brought in the District of Columbia, § 146 does

not limit the ability of other district courts to hear these

actions. Instead, § 146 simply provides a mechanism to ensure

that a plaintiff can obtain personal jurisdiction over a foreign

defendant. See, e.g., Cell Genesys, Inc. v. Applied Research

Sys., No. 04-1407,

, at *10 (D.D.C.

Jan. 18, 2005) (“[S]ection 146 does not require that [an action

against a foreign entity] be filed in the District of Columbia,

9 but rather simply ensures that a forum is available for a civil

action relating to an interference where one party is a resident

of a foreign country.”); Standard Oil Co. v. Montecatini Edison

S.p.A.,

(D. Del. 1972) (“[T]he purpose of §

146, relating to the District Court for the District of Columbia,

was merely to provide for long arm service of process in order to

obtain in personam jurisdiction in cases where the adverse

parties do not reside in the same state or where a party is an

alien. § 146 was never intended to constrict the grant of subject

matter jurisdiction of district courts over civil actions arising

under the patent laws[.]”).5

In this case, because Abbott GmbH submitted itself to the

jurisdiction of the Massachusetts district court when it sued

Centocor in the Massachusetts Litigation, the District of

Massachusetts also has personal jurisdiction over Abbott GmbH

with respect to any disputes between Abbott GmbH and Centocor

related to the ’128 and ’485 patents. See, e.g., Gen. Contracting

& Trading Co. v. Interpole, Inc.,

(1st Cir. 1991)

5 See also Jean Patou v. Societe Anonyme Societe Technique,

(S.D.N.Y. 1955)(rejecting the contention that because the defendant was a foreign corporation, § 146 gave the District Court of the District of Columbia exclusive jurisdiction; emphasizing that “[i]t seems obvious that Section 146 gives the right to bring a civil action in any court of competent jurisdiction and that therefore any District Court has jurisdiction of the subject matter,” and explaining that Section 146 confers jurisdiction on the District of Columbia jurisdiction in those cases where “personal jurisdiction would otherwise be difficult or impossible to obtain”).

10 (“Trastco elected to avail itself of the benefits of the New

Hampshire courts as a plaintiff, starting a suit against

Interpole. By so doing, we think it is inevitable that Trastco

surrendered any jurisdictional objections to claims that

Interpole wished to assert against it in consequence of the same

transaction or arising out of the same nucleus of operative

facts.”); Neuralstem, Inc. v. StemCells, Inc.,

(D. Md. 2008) (“[P]ersonal jurisdiction may be based

upon implied consent or waiver when a non-resident files a claim

in the forum state that involves the same transaction.”); Foster

Wheeler Energy Corp. v. Metallgesellschaft AG, No. 91-214-SLR,

, at *4 (D. Del. Jan. 4, 1993) (“A

court may assert personal jurisdiction over a party on the ground

that the party consented to jurisdiction by submitting itself to

a court’s jurisdiction by instituting another, related suit.”).

Because the Section 146 Action is substantially related to the

Massachusetts Litigation, see Pl.’s Opp’n Br. at 4 (“The parties

and subject matter in the Massachusetts Litigation overlap

substantially with the Section 146 Action . . . .”), the Court

concludes that Centocor could have brought its Section 146 Action

in the District of Massachusetts.6

6 While not relevant to the Court’s § 1404(a) analysis, it should be noted that Abbott GmbH has also expressly waived any objection to personal jurisdiction regarding adjudication of the § 146 action by the District of Massachusetts. See Def.’s Mot. at 7 n.2 (“Abbott GmbH expressly waives any objection it could

11 2. The Declaratory Judgment Action

Likewise, Centocor’s Declaratory Judgement Action also could

have been brought in the District of Massachusetts, as there is

complete overlap in the parties and subject matter of the

actions. See Pl.’s Opp’n Br. at 4 (acknowledging the actions

“overlap entirely”).

Accordingly, the D.C. Litigation could have been filed in

the District of Massachusetts.

C. The Balance of Private and Public Interests

Next, in determining whether considerations of convenience

and the interests of justice support transfer, the Court weighs a

number of private-interest and public-interest factors. See

Devaughn,

. In this case, those factors

weigh in favor of transfer.

1. Private-Interest Factors

The private-interest considerations the Court looks to when

deciding whether to transfer a case include: “‘(1) the

plaintiff’s choice of forum; (2) the defendant’s choice of forum;

(3) where the claim arose; (4) the convenience of the parties;

(5) the convenience of witnesses, particularly if important

witnesses may actually be unavailable to give live trial

testimony in one of the districts; and (6) the ease of access to

sources of proof.’” Greene v. Nat’l Head Start Assoc., 610 F.

exercise to the District of Massachusetts exercising personal jurisdiction to adjudicate Centocor’s Section 146 action.”).

12 Supp. 2d 72, 74-75 (D.D.C. 2009) (quoting Demery v. Montgomery

County,

(D.D.C. 2009)).

With regard to the first factor, the Court typically accords

“substantial deference” to a plaintiff’s choice of forum.

Reiffin v. Microsoft Corp.,

(D.D.C. 2000).

“However, when a plaintiff is not a resident of the forum and

‘most of the relevant events occurred elsewhere,’ this deference

is weakened.” Greene, 610 F. Supp. 2d at 75 (quoting Aftab v.

Gonzalez,

(D.D.C. 2009)); see, e.g.,

Hunter v. Johanns,

(D.D.C. 2007)

(explaining that the “strong presumption” against disturbing a

plaintiff’s choice of forum is diminished “when the forum is not

plaintiff’s home forum” and “the relevant events occurred

elsewhere”). Plaintiff in this case is not a resident of the

District of Columbia; nor did the operative events underlying the

complaints occur in the District of Columbia. Nevertheless,

plaintiff argues that its choice of forum should be given

deference because the District of Columbia was the only forum

where it “could be assured of personal jurisdiction over Abbott

GmbH.” Pl.’s Opp’n Br. at 6. As discussed above, while the

Court concludes that the lawsuit need not have been brought in

the District of Columbia – and indeed, could have been brought in

the forum of the first-filed lawsuit - the Court is still

sympathetic to plaintiff’s argument. Accordingly, the Court

13 affords some, but not substantial, deference to plaintiff’s

choice of forum. See Cell Genesys,

,

at *10 (concluding that plaintiff’s decision to sue a foreign

defendant in the District of Columbia pursuant to § 146 “was

reasonable and [was] entitled to some consideration even though

the District of Columbia ha[d] no meaningful ties to the parties

or controversies”).

Next, the Court considers the defendant’s choice of forum.

Defendant’s choice of forum is imminently reasonable in light of

the fact that it filed a related action in the District of

Massachusetts nearly three weeks prior to Centocor’s commencement

of litigation in this forum. As discussed above, the first-filed

rule weighs heavily in favor of transfer. Moreover, unlike this

forum, the District of Massachusetts has at least some ties to

the subject matter of this litigation. Indeed, “much of the

development of the intellectual property covered by the patents-

in-suit took place at ABC in Massachusetts,” and many of

defendant’s party and non-party witnesses live or work in

Massachusetts. Def.’s Opp’n Br. at 1; see also Decl. of Paul B.

Keller (listing numerous co-inventors of the patents-in-suit that

work or reside in Massachusetts). Defendant’s choice of forum

therefore favors transfer.

14 With regard to the third factor - where the claims arose –

this factor is treated as neutral in the Court’s analysis because

it was not directly addressed by either party.

As to the fourth factor, the convenience of the parties,

neither plaintiff nor defendant resides in the District of

Columbia or Massachusetts. While defendant’s sister company and

co-defendant in the Massachusetts Litigation - ABC - has its

principal place of business in Massachusetts, ABC is not a party

to this litigation. Accordingly, the Court finds this factor to

be neutral.

Fifth, with regard to the convenience of the witnesses, the

Court considers “the availability of compulsory process to

command the attendance of unwilling witnesses, and the cost of

obtaining the attendance of willing witnesses.” Reiffin,

. As a threshold matter, neither party has

identified any potential witnesses that reside in the District of

Columbia. Defendant, however, has identified numerous, potential

witnesses that live in Massachusetts, including some non-party

patent co-inventors over whom compulsory process may be

necessary. See Decl. of Paul B. Keller; see also Def.’s Br. at

10-11. While plaintiff argues that the District of Columbia is

more convenient for its Pennsylvania-based witnesses, plaintiff

has submitted no evidence indicating that obtaining the

attendance of these witnesses would be substantially more

15 expensive if the D.C. Litigation was transferred. See Pl.’s Ex.

B, Decl. of Matthew A. Pearson ¶ 4 (explaining that this Court is

approximately 140 miles closer than the District of

Massachusetts). Therefore, because many of defendant’s potential

witnesses - including third-party witnesses - work or reside in

Massachusetts, and no potential witnesses work or reside in the

District of Columbia, the convenience of the witnesses weighs in

favor of transfer.

The final private-interest factor that the Court considers

is access to proof. Defendant argues that access to proof would

be easier if the case were transferred to the District of

Massachusetts because “a substantial number of Abbott’s

documents, including the documents and things relating to the

conception, reduction to practice, and the filing and prosecution

of the ‘485 patents, are located in Massachusetts.” Def.’s Mot.

at 11-12. While plaintiff asserts that “relevant records are

also likely to be found in many locations outside Massachusetts,”

Centocor does not dispute that many relevant records are indeed

located in Massachusetts. Nor does plaintiff argue that relevant

records are located in the District of Columbia. Accordingly,

this factor also weighs in favor of transfer.

2. Public-Interest Factors

Having concluded that plaintiff’s choice of forum is

entitled to less deference and that other private-interest

16 factors are neutral or favor transfer to the District of

Massachusetts, the Court now turns to the public-interest

factors. The public-interest considerations include: (1) the

transferee’s familiarity with the governing laws; (2) the

relative congestion of the calendars of the potential transferee

and transferor courts; and (3) the local interest in deciding

local controversies at home. Devaughn,

.

With regard to the familiarity of governing law, defendant

argues that Judge Saylor, who is presiding over the Massachusetts

Litigation, has experience with the human antibody technology

implicated by the ’128 and ’485 patents, and will therefore be

able to more efficiently and effectively resolve the pending

cases. See Def.’s Mot. at 13-14. But see Pl.’s Br. at 13

(explaining that while two of Judge Saylor’s cases “involve

patents relating to human antibodies to the target TNF-alpha,”

“the patents involved in the Massachusetts Litigation and the

D.C. Litigations relate to human antibodies to a very different

target, IL-12”). Plaintiff counters that the D.C. District Court

is “uniquely familiar” with § 146 actions, by virtue of its

special jurisdictional grant. See Pl.’s Opp’n Br. at 13. As a

threshold matter, the Court notes that these cases involve the

application of federal law, with which all district court judges

are generally familiar. See, e.g., Cell Genesys,

, at *14-15 (“[T]his factor in its original design had

17 more to do with familiarity with the governing body of law,

particularly state law, than with the specific applications of

federal law . . . .”). Nevertheless, while this Court is

certainly capable of resolving the pending disputes, the Court

recognizes that Judge Saylor’s previous experience with human

antibody patents would be a valuable asset in the resolution of

these cases, and indeed, would likely outweigh this Court’s

general familiarity with § 146 actions. The Court therefore

concludes that this factor also favors transfer. See id.

(concluding that the transferee judge’s familiarity with

biotechnology patent issues weighed in favor of transfer).

In terms of the relative congestion of the calendars of the

potential transferee and transferor courts, neither party puts

forth any evidence on this issue. Accordingly, this factor is

neutral with respect to transfer.

Finally, with regard to the local interest in deciding

local controversies, the Court concludes that this factor is also

neutral. While defendant argues that Massachusetts has a

particularized interest in the resolution of this dispute due to

the fact that its sister-company ABC is a domiciliary of

Massachusetts, see Def.’s Br. at 12, the Court finds this

argument unpersuasive in light of the fact that ABC is not a

party to the D.C. Litigation.

18 In sum, having given due consideration to the fact that the

Massachusetts Litigation was first-filed, and having balanced

plaintiff’s choice of forum in the District of Columbia against

the relevant private-interest and public-interest factors,

including the general public interest in having the related

litigation resolved by one court, this Court concludes that the

balance of private and public interests counsels in favor of

transferring the D.C. Litigation to the District of

Massachusetts.

IV. CONCLUSION

Accordingly, for the foregoing reasons, the Court GRANTS

defendant’s motion to transfer venue to the District of

Massachusetts. An appropriate Order accompanies this Memorandum

Opinion.

Signed: EMMET G. SULLIVAN United States District Court Judge December 18, 2009

19